Brooks & Baker v. Flambeau et. al

8/3/2019 Brooks & Baker v. Flambeau et. al.

http://slidepdf.com/reader/full/brooks-baker-v-flambeau-et-al 1/23

IN THE UNITED STATES DISTRICT COURTFOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

BROOKS & BAKER, L .L .C .

Plaintiff

§§§§§

v. §§

CAUSE NO. ___________

FLAMBEAU, INC., NORDIC GROUPOF COMPANIES, LTD.,WILLIAM R. SAUEY, individually,and JASON C. SAUEY, individually,

Defendants

§§§

§§§§

JURY TRIAL DEMANDED

COMPLAINT

Plaintiffs, Brooks & Baker, L .L .C ., and John Q. Consumer, by their undersigned counsel,

bring this action against Defendants Flambeau, Inc., The Nordic Group of Companies, William R.Sauey, in his capacity as an individual, and Jason C. Sauey, in his capacity as an individual, and

alleges as follows:

NATURE OF THE ACTION

1. This is an action for patent infringement under 35 U.S.C. § 271; for false patent

marking under 35 U.S.C. § 292; for violations of the Lanham Act, 15 U.S.C. §§ 1125; for common

law unfair competition; for breach of contract.

PARTIES

2. Plaintiff Brooks & Baker, L.L.C. (“BBLLC” or “Plaintiff”) is a company incorporated

under the laws of Delaware, with its principal place of business at 1912 Cliffside Drive, Pfafftown,



North Carolina 27040.

3. Upon information and belief, Defendant Flambeau, Inc. (“Flambeau”) is a

Wisconsin corporation that is amenable to service of process through its registered agent, William

R. Sauey, at 801 Lynn Avenue, Baraboo, WI 53913.

4. Upon information and belief, Defendant Nordic Group of Companies Ltd. (“Nordic”)

is a company incorporated under the laws of Wisconsin, which company is amenable to service of

process through its registered agent, William R. Sauey, 414 Broadway, Suite 200, Baraboo, WI

59313.

5. Upon information and belief, Flambeau is a wholly owned subsidiary of Nordic.

6. Upon information and belief, Defendant William R. Sauey (“WRSauey”) is currently

the Chairman of the Board of Defendant Nordic, and is amenable to service of process at his place of

business, 414 Broadway, Suite 200, Baraboo, WI 59313 and at his principal residence, 53747

County Road T, Baraboo, WI 53913-9059.

7. Upon information and belief, Defendant WRSauey is the founder and former

President of Flambeau and, along with members of his immediate family, controls a significant

ownership interest in Defendant Nordic, a closely held private corporation.

8. Upon information and belief, Defendant Jason C. Sauey (“JCSauey”) is and has been

the President of Flambeau, Inc., and is amenable to service of process at his place of business, 801

Lynn Ave., Baraboo, WI 53913.

9. Upon information and belief, Defendant JCSauey is a member of the Boards of

Directors of both Flambeau and Nordic, and also serves as a corporate officer in both companies,

having recently assumed the position of Chief Executive Officer of Defendant Nordic, succeeding

William R. Sauey.

10. Upon information and belief, Flambeau started as a family-owned company and

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members of the Sauey family remain in key decision-making positions in both Flambeau and

Nordic, as evidenced by defendant JCSauey’s overlapping directorship and corporate officer

positions.

11. Upon information and belief, Defendants Flambeau and Nordic are retailers of,

among many other things, products and devices used in outdoor sports and recreation, such as the

patented lighted fishing tackle box at issue in this case.

JURISDICTION AND VENUE

12. The claims for patent infringement in this action arises under 35 U.S.C. § 271, and

the claims for trademark infringement and unfair competition arise under 15 U.S.C. § 1125.

13. Subject matter jurisdiction exists pursuant to 28 U.S.C. §§ 1331 and 1338(a). The

Court has supplemental jurisdiction under 28 U.S.C. § 1367 over any claims rising under state law

because those claims are so related to the claims in the action within the Court’s primary

jurisdiction that they form part of the same case or controversy under Article III of the Constitution.

14. Personal jurisdiction over Defendants is proper because they routinely offer for sale

and sell their products, including the accused infringing goods, in Texas, and in this District, which

acts constitute violations of 35 U.S.C. § 271. Specifically, the sale of Defendants’ infringing

products in Texas arose from the efforts of the Defendants to serve, and to profit therefrom, a

market in Texas.

15. Defendants purposefully directed their infringing products at residents of Texas, and

this litigation arises in part from the sale of those infringing products in Texas.16. Defendants’ contacts with Texas are sufficient to give Defendants fair warning that

their sales of the infringing products could subject them to litigation in Texas. The interest of

Plaintiffs and the residents of Texas in protecting the value of patents, promoting innovation, and

being free from false patent marking, outweigh the burden on Defendants in defending litigation in

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Texas.

17. Venue exists in this judicial district pursuant to 28 U.S.C. §§ 1391(c) because, under

that section, Defendant is deemed to reside in any judicial district in which it is subject to personal

jurisdiction at the time the action is commenced, as further supported by the Internet-based solicitation

of sales in this District, and actual sales of the accused products to consumers in this District .

18. Defendants purposefully marketed their infringing products in this forum because

Plaintiff notified Defendants that their products infringe the plaintiff’s patent and Defendants made

no attempt to avoid this Court’s jurisidiction as evidenced by their continuing to introduce the

accused products into the stream of commerce, and permitting it to be sold in this forum, and

shipped to this forum.

BACKGROUND FACTS

19. Todd C. Baker (“Baker”) is the Chief Executive Officer of BBLLC, and Penny

Brooks (“Brooks”) is the President of BBLLC.

20. Over a number of years, Baker, along with partner Brooks, developed a number of

inventive and novel products, for both BBLLC and its predecessor, Baker Innovations, L.L.C.

(“BILLC”), among them a line of utility storage boxes that had in common a unique feature

comprising an internally mounted light source.

21. In furtherance of their plans to manufacture and market their patented product line of

unique storage boxes adapted for a wide range of applications, Brooks and Baker commenced

discussions with a representative of Defendant Flambeau, Robert Hammil (“Hammil”), Flambeau’s

chief engineer, in October of 2002. Flambeau’s initial reaction to the product line disclosed by

Brooks and Baker was favorable.

22. As a consequence, Defendant Flambeau, through 2003 and well into 2004, conducted

a rigorous due diligence into the product line offered by Brooks and Baker, as well as conducting

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extensive research into the potential market for such products.

23. Mid-way through 2003, Defendant Flambeau informed Brooks and Baker of

Flambeau’s desire to obtain an exclusive license under the Brooks and Baker ‘484 patent in order to

market four products covered by the patent: a lighted fishing tackle box; a lighted tool box; a

lighted paramedic chest; and a lighted utility box, all products to be sold by Defendant Flambeau

worldwide under the trademark NIGHT RANGER, the rights to which were developed and owned

by Brooks and Baker, and were to be included under the proposed exclusive license.

24. From June of 2003 through April of 2004, Defendant Flambeau conducted the

necessary production engineering of the product design and developed pricing and marketing

strategies for the contemplated products.

25. During this period, Brooks and Baker continued to refine the design of their line of

lighted utility boxes, leading to the development of additional inventions. As a consequence,

Brooks and Baker filed U.S. provisional patent application serial number 60/580,127 (“the ‘127

application) on June 17, 2004, and U.S. provisional patent application serial number 60/611,217

(“the ‘217 application”) on September 20, 2004.

26. Brooks and Baker filed U.S. utility application serial number 11/057,448 (“the ‘448

application”) on February 14, 2005, claiming priority to the ‘127 and ‘217 provisional applications.

27. U.S. Letters Patent No. 7,055,983, entitled “TACKLE AND STORAGE BOX WITH

A ROTATABLE LIGHT,” issued from the ‘448 application on June 6, 2006, naming Brooks and

Baker as inventors, and assigned at issuance to BBLLC. A true copy of the ‘983 patent is attached

hereto at Exhibit Error! Reference source not found. .

28. In April of 2004, Defendant Flambeau executed an exclusive, worldwide License

Agreement (the “Agreement”), with Baker executing the Agreement on behalf of BILLC, the

predecessor entity to BBLLC, and Jeff Bush, on information and belief, a Vice-President of

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Defendant Flambeau, executing the Agreement on behalf of Flambeau. A copy of the Agreement is

attached hereto at Exhibit Error! Reference source not found. .

29. During the eighteen months between initial contact with Flambeau and execution of

the Agreement, Plaintiff had frequent and recurring communications with Defendants WRSauey and

JCSauey, such contacts largely arising out of Plaintiff’s increasing frustration with the apparent lack

of progress on Defendants’ parts in bringing the contemplated Agreement to fruition.

30. Upon information and belief, only the direct intervention and involvement of

WRSauey and/or JCSauey were responsible for resolving whatever internal issues delayed the

process, allowing execution of a final agreement.

31. Among its provisions, the Agreement obligated Defendant Flambeau to pay to

Brooks and Baker a 5% royalty on net sales of products under the license, with a requirement to

provide Brooks and Baker with both an accounting of sales and a payment for any royalties accrued

within forty-five days of the end of each calendar quarter for the five-year term of the Agreement.

32. Defendant Flambeau unveiled the first of the licensed products, the NIGHT

RANGER™ lighted fishing tackle box, at the International Convention of Allied Sportfishing

Trades (“ICAST”), the largest trade show in the world servicing noncommercial-scale fishing-

related businesses, in July of 2004, and the product was very well received.

33. In October of 2004, Defendant Flambeau notified Brooks and Baker that, in

Flambeau’s opinion, the products being sold under the NIGHT RANGER mark were not covered by

the claims of the ‘484 or ‘672 patents and that, as a consequence, the Agreement would have to be

modified to reflect a lower, 1% royalty rate for products sold not covered by a Brooks and Baker

patent.

34. At about this time, Baker informed Defendant Flambeau that the lighted tackle box

products should not be marked with the ‘484 and ‘672 patent numbers (as had been done for initial

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samples and limited product runs) if, as Flambeau concluded, the claims of that patent did not cover

the products. Flambeau responded by stating that they would add the patent number for any patent

issuing from the then-pending patent applications, once a patent were to issue.

35. However, Defendant Flambeau conditioned this corrected marking on the execution

of the revised license agreement with a lower tier of royalty rate for “non-patented” products. The

only other option that Defendant Flambeau offered to Brooks and Baker was to terminate the

Agreement.

36. Full-scale production of the first NIGHT RANGER lighted tackle boxes under the

Agreement began around December of 2004 and, despite the notice that Baker had provided to

Defendant Flambeau concerning marking the products with the Brooks and Baker patent numbers,

and despite Flambeau’s stated conclusion that the claims of the ‘484 and ‘672 patents did not cover

the initial product, the first products and, upon information and belief, all lighted utility boxes

marketed subsequently, continuing to date, by Defendant Flambeau have been marked with the

Brooks and Baker patent numbers for the ‘484 and ‘672 patents. See Exhibit C, attached.

37. Brooks and Baker had no practical option available to them at that time but to agree

to the revised terms. Consequently, handwritten revisions were made to the Agreement and initialed

by the parties. A copy of the revised Agreement (“Agreement 2,” collectively the “Agreements”)

reflecting these changes is attached at Exhibit D.

38. In early 2005, Flambeau informed Brooks & Bakers that it’s new line of licensed

NIGHT RANGER lighted boxes were doing well and they were in the process of securing

placements, or had already secured placement, with several national-scale retailers such as Gander

Mountain, Dick’s Sporting Goods and Canadian Tire.

39. Despite the reporting and payment obligations assumed by Defendant Flambeau

under the Agreement, Flambeau was late in providing sales reports to Brooks and Baker, and what

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reports it did provide were inaccurate, internally inconsistent and lacked the supporting

documentation reflecting actual sales data required under the reporting clause of the Agreement.

40. Despite the reported success of the licensed lighted utility box products, Flambeau

did not make any royalty payments until December of 2005, a payment that was inconsistent with

sales reports previously provided.

41. To date, Defendant Flambeau has failed to provide Brooks and Baker with a full

accounting of sales of the licensed products and failed to pay accurate and documented royalties

owed under the Agreement.

42. Due to the exclusive nature of the license rights under the Agreement, Defendant

Flambeau’s failure to provide accurate sales figures and timely royalty payments had a devastating

effect on the business interests and financial position of Brooks and Baker, as they were unable to

realize any monetary benefit from their inventions while the exclusivity of the Agreements was in

effect.

43. Despite obligations under the “Best Efforts” clause of the Agreement (see § 3.e. of

Agreements, attached at Exhibits Error! Reference source not found. , D), through the latter half

of 2005, Defendant Flambeau failed to maintain adequate advertising and marketing efforts for the

products licensed under the Agreement.

44. As a result of increasing frustration over the lack of performance by Defendant

Flambeau under the Agreement, Brooks and Baker, by letter, informed Flambeau that they wished

to terminate the Agreement due to material breaches of that Agreement by Flambeau. See Exhibit

E, attached.

45. Defendant Flambeau’s response was to deny any breach of the Agreement, instead

claiming that they were unaware somehow that Brooks and Baker had not received the accounting

reports required under the Agreement. Flambeau further stated that they were not willing to

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terminate the Agreement at that time and would reevaluate the Agreement at the end of the shipping

season for fishing products in July of 2006. See Exhibit F, attached.

46. In effect, Defendant Flambeau took the position that, if they were somehow in breach

of the Agreement, they had taken steps to cure the breach and that, in their opinion, the Agreement

was still in force, at least until they decided to terminate it.

47. In fact, Defendant Flambeau’s consistent refusal to timely provide sales reports for

the products under license, the paucity of consistent, reliable data on sales, and the virtual refusal to

pay license fees due and owing (in a perverse display of creative accounting, Defendant Flambeau

contends that they have overpaid Brooks and Baker for royalties due under the Agreements and has

demanded a refund of the overpayment) have demonstrated that Flambeau has not cured their

default and that, as of no later than February of 2006, the Agreement terminated under its own

terms.

48. The communication from Defendant Flambeau to Baker’s notice of termination for

breach, over the signature of Jeff Bush (“Bush”), Flambeau’s Sr. Vice President, Retail Markets

Group, as well as subsequent communications with Baker and/or Brooks concerning mutual

obligations under the Agreements indicated that Defendants WRSauey and JCSauey ( see, for

example, Exhibit F, attached) were informed of the course of dealings with Brooks and Baker, were

knowledgeable of Defendants Nordic’s and Flambeaus’s decisions regarding lighted utility box

products, and consented to all related decisions by Defendants Nordic and Flambeau. Furthermore,

Defendants WRSauey and JCSauey personally participated in conversations with representatives of

Plaintiff in Plaintiff’s attempts to resolve outstanding contract issues.

49. On information and belief, Defendants WRSauey and JCSauey were personally

involved in the major decisions concerning the Brooks and Baker license agreements and marketing

of the NIGHT RANGER™ and related products, cooperated in the actions complained of herein,

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and at all times had knowledge of and consented to the actions of Defendants Flambeau and Nordic

with respect to Brooks and Baker and their licensed rights.

50. In July of 2006, Brooks and Bakers learned, without notice from Defendant

Flambeau, that Flambeau had removed their licensed products from Flambeau’s sales offerings,

including catalog and online listings. Furthermore, Flambeau had replaced the licensed NIGHT

RANGER products with a product line of lighted utility boxes that are nearly exact copies of the

licensed products originally marketed under the NIGHT RANGER trademark, including marking

with the Brooks and Baker patent numbers. Despite this marking, Defendant Flambeau has

maintained in communications with Brooks and Baker that these patents do not cover the products

that Flambeau was marketing.

THE PATENTS-IN-SUIT

51. On June 6, 2006, the United States Patent and Trademark Office duly and legally

issued Patent No. 7,055,983, entitled “TACKLE AND STORAGE BOX WITH ROTATABLE

LIGHT,” to inventors Penny Brooks and Todd Baker. Brooks & Baker, L.L.C. owns all right,

title, and interest in and to the ‘983 patent. See Exhibit Error! Reference source not found. ,

attached.

THE ACCUSED PRODUCT

52. Beginning no later than July of 2006, Defendants have been manufacturing or

causing to be manufactured, as well as using, selling and offering for sale, products comprising

lighted utility boxes that are nearly exact copies of the NIGHT RANGER boxes originally licensed

under the Agreement with Brooks and Baker. These products, including but not limited to those

that are marketed with the name Zerust Front Loader Tackle Box, have a battery powered lamp and

battery assembly that is mounted on the interior of the lid of the box. The light from the swivel-

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mounted battery powered lamp can be emitted in a number of different directions relative to the lid

and the base of the box.

53. The Zerust Front Loader Lighted Fishing Tackle Box (as well as identical products

marketed under different product names, such as, by way of example only, and without imitation,

lighted paramedic boxes sold through the Flambeau Medical Products division) is manufactured,

used, offered for sale, sold and/or imported throughout the United States by the Defendants.

54. Upon information and belief, Defendant Flambeau also has imported, offered for

sale and sold lighted utility boxes under the NIGHT RANGER product name after termination of

the Agreements, in contravention of the express termination clauses of the Agreements.

COUNT I: INFRINGEMENT OF THE 7,055,983 PATENT

(In Respect To Defendants Nordic And Flambeau)

55. The allegations in Paragraphs 1 through 54, supra , are incorporated by reference in

this Count as if fully restated herein.

56. In violation of 35 U.S.C. § 271, Defendants have infringed and are continuing to

infringe, literally and/or under the doctrine of equivalents, the ‘983 patent by practicing the

invention claimed in one or more claims of the ‘983 patent in their manufacture, use, offering for

sale, sale and/or importation of lighted utility boxes, marketed as a Zerust Front Loader Tackle

Box, a Night Ranger ™ Lighted Fishing Tackle Box, or other similar products marketed under

different product names and trademarks, throughout the United States, and/or by inducing or

contributing to the infringement of the ‘983 patent by others.

57. The Defendants' acts of infringement will continue unless enjoined by this Court.

58. The Defendants' acts of infringement have caused and will continue to cause Plaintiff

substantial and irreparable injury for which Plaintiff is entitled to receive injunctive relief and money

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damages adequate to compensate the plaintiff for such infringement.

59. Upon information and belief, the Defendants have been on notice of the ‘983 patent

since at least as early as June 6, 2006.

60. Despite express and constructive knowledge of the ‘983 patent, the Defendants have

continued to engage in their infringing activity.

61. Thus, the Defendants' acts of infringement have been willful and deliberate and part

of a preconceived and concerted effort to inflict monetary and business harm on the Plaintiffs,

clearly rendering this case "exceptional" within the meaning of 35 U.S.C. § 285.

COUNT II: FALSE PATENT MARKING


62. The allegations in Paragraphs 1 through 61, supra , are incorporated by reference in

this Count as if fully restated herein.

63. By no later than December of 2004, Defendant Flambeau had begun full-scale

manufacturing of the first NIGHT RANGER™ lighted tackle boxes and, upon information and

belief, had previously caused to be manufactured more limited quantities for advance marketing and

demonstration purposes.

64. From at least the initial production runs, Defendant Flambeau caused all of the

licensed products to be marked with the numbers of the ‘484 and ‘672 patents, along with the

phrase, “And others.”

65. However, despite this marking, Defendant had previously taken the position with

Brooks and Baker that the’484 and’672 patents did not cover the products being manufactured,

offered for sale and sold under the terms of the Agreement.

66. Indeed, based on this position, Defendant Flambeau had forced Brooks and Baker to

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accept a revised license Agreement in which the stated royalty rate was at 1% for non-patented

products, as opposed to the original 5% for products covered by at least one claim of an issued

patent. See Exhibit D, attached.

67. Despite Baker’s urging that Flambeau change the marking of the licensed products to

reflect the terms of the revised Agreement, Defendant Flambeau took no steps to effect any changes

in the marking on the products, even though this would not have been unduly burdensome to

Flambeau in that the false marking in question was on a single, relatively minor (although highly

visible) component of the assembled product – the base plate of the flexible illumination source

through which the light source is affixed to its mounting position on the inside of the cover of the

lighted utility box products.

68. Upon information and belief, all of the NIGHT RANGER products manufactured,

imported, offered for sale, and sold by Defendant Flambeau were marked with the ‘484 and ‘672

patent numbers.

69. An additional consideration is that the statutory term of validity for the ‘672 patent

expired on April 28, 2006 – less than one and a half years after the initial production run of the

licensed products. Any products, regardless of the opinion that the claims of the ‘672 patent did or

did not cover the licensed product, sold after that date marked with the number of the ‘672 patent

would constitute incidents of false patent marking.

70. Beginning no later than summer of 2006, Defendant Flambeau began manufacturing,

importing, offering for sale and selling a line of lighted utility boxes that replaced the NIGHT

RANGER™ line of products in Flambeau’s on-line and print catalog offerings, which products

were virtually identical to the licensed NIGHT RANGER™ products with the exception of the

cosmetic appearance of a limited number of plastic panels on the product.

71. Defendant Flambeau has consistently asserted that these products were outside of its

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Agreements with Brooks and Baker and, consequently, outside of the claims of the Brooks and

Baker patents, including the ‘983 patent, which patent issued in June of 2006, and of which

Defendants had constructive and actual notice. Thus, Defendant Flambeau did not consider that it

was obligated to, nor did, in fact, account for sales of these products in any royalty reporting to

Brooks and Baker.

72. Upon information and belief, Defendant Flambeau caused all of these products,

marketed as Zerust Front Loader Tackle Box with Light and, possibly, other product names, to be

marked falsely with the ‘484 and ‘672 patent numbers.

73. Each false marking on these products is likely to, or at least has the potential to,

discourage or deter persons and companies from commercializing competing products.

74. Defendants’ false marking of products with the ‘484 and ‘672 patent numbers has

wrongfully quelled competition with respect to such products, thereby causing harm to Plaintiffs,

the United States and to the consuming public at large.

75. As a result of their false marking, Defendants have illegally advertised a patent

monopoly that they did not possess and, as a result, have benefitted commercially and financially by

maintaining false statements of patent rights.

COUNT III: INFRINGEMENT OF THE UNREGISTERED

TRADEMARK NIGHT RANGER


76. Paragraphs 1 through 75, supra , are incorporated by reference in this Count as if

fully restated herein.

77. Upon information and belief, Defendants have engaged in the unauthorized use in

commerce of Plaintiffs’ unregistered NIGHT RANGER trademark, in association with lighted

utility box products (the “Infringing Products”) manufactured, imported, offered for sale and sold

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after termination of the Agreement, without Plaintiffs’ knowledge, permission or consent.

78. Defendants’ unauthorized use of Plaintiffs’ trademark in commerce in association

with the infringing products was, and is, likely to cause confusion, or to cause mistake, or to

deceive the public, in violation of the Lanham Act, 15 U.S.C. § 1125(a). Defendants have

committed these acts with the knowledge and specific intent that their use of Plaintiffs’ trademark

would cause confusion, deception, or mistake.

79. As a direct and proximate result of Defendants’ willful infringing conduct, Plaintiffs

have been damaged and will continue to be damaged in an amount now uncertain but that will be

proven at trial. Defendants’ infringing conduct entitles Plaintiffs to recover their actual damages,

trebled, together with Defendants’ profits, and Plaintiffs’ attorneys’ fees and costs.

80. Plaintiffs are entitled to a permanent injunction to prevent future infringing conduct

and to seizure and return and/or destruction of all infringing products.

COUNT IV: INFRINGEMENT OF UNREGISTERED TRADEMARK

IN THE NIGHT RANGER PRODUCT CONFORMATION/TRADE DRESS




82. By the time that Defendant Flambeau and Brooks and Baker had entered into the

initial Agreement for a license to Flambeau under the Brooks and Baker patents and trademarks,

Brooks and Baker had expended considerable resources in the development of brand strength and

brand loyalty among consumers for their NIGHT RANGER™ products.

83. It was contemplated by the parties to the Agreement that the exclusive license

granted under that Agreement would not preclude Brooks and Baker from continuing these types of

marketing efforts and that, in effect, both Defendants Flambeau and Nordic, as well as Brooks and

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Baker, would benefit from such efforts in that all sales consummated through the efforts of Brooks

and Baker would depend on actual product manufactured and fulfilled by Flambeau.

84. After execution of the Agreement, Brooks and Baker did, in fact, continue their

efforts in marketing the NIGHT RANGER™ products and were successful in promoting the

products through a number of national media outlets, advertisers and retail outlets.

85. As a consequence of the success of these efforts, expended both before and after

execution of the Agreements, the NIGHT RANGER mark acquired substantial recognition among

consumers of these types of products and engendered a significant level of brand loyalty among

those consumers.

86. In addition to the NIGHT RANGER mark itself as found on the lighted utility

storage boxes, the overall conformation and trade dress of these products, including the unique

shape of the boxes’ upper lid, the contrasting colors of the plastic panels comprising the box’s

exterior structure, the highly unique aspect of the distinctive shape of the illumination source (and

its resulting beam of illumination) visible when the box’s lid is open, and the conformation of the

prominent clasps and handles in colors contrasting to the body of the box - all serve as potential and

actual indicia of origin, identifying to consumers the source of the goods, even if consumers could

not specifically identify that source as Brooks and Baker.

87. Moreover, among these indicia of origin, in addition to the overall conformation and

color characteristics recited above, are the patent numbers of the Brooks and Baker patents. Placed

as they are on the mounting plate of the light source mounted on the interior of the cover of the box,

they are inevitably detected by any discerning consumer who, in contemplating a potential

purchase, is highly likely to inspect the utility box with the cover open so as to observe the effect of

the products’ unique selling point – its illumination source.

88. Consequently, the Brooks and Baker patent numbers are highly visible to potential

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consumers as well as to users and can serve a basic trademark function – to uniquely identify the

goods as coming from a specific source – if those numbers are visible, then this must be the product

for which the consumer is looking, and not some inferior, unlicensed knock-off.

89. In the five or more years prior to Defendant Flambeau’s introduction of the Zerust

Front Loader Tackle Box with Light, Brooks and Baker, as well as Defendant Flambeau, expended

considerable resources to market and create a demand for the licensed products, which efforts

successfully engendered considerable secondary meaning in the trade dress and/or conformation of

the lighted tackle box products sufficient to render such conformation/trade dress distinctive and

these marks capable of protection.

90. Consequently, Defendant Flambeau’s manufacture, importing, offering for sale and

sale of these goods, substantially copied from the NIGHT RANGER™ products, including the

essential components of conformation and trade dress found in those products, among them the

patent marking numbers for the Brooks and Baker patents, constitutes infringement of Plaintiffs’

trademark rights in violation of the Lanham Act, 15 U.S.C. § 1125(a)(1).

91. Defendants’ unauthorized use of Plaintiffs’ trademark in commerce in association

with the infringing products was, and is, likely to cause confusion, or to cause mistake, or to

deceive the public. Defendants have committed these acts with the knowledge and specific intent

that their use of Plaintiffs’ trademark would cause confusion, deception, or mistake, and to benefit

commercially from that confusion, to the detriment of the buying public, and contrary to the

commercial interests of Brooks and Baker.

92. As a direct and proximate result of Defendants’ willful infringing conduct, Plaintiffs

have been damaged and will continue to be damaged in an amount now uncertain but that will be

proven at trial. Defendants’ infringing conduct entitles Plaintiffs to recover their actual damages,

trebled, together with Defendants’ profits, and Plaintiffs’ attorneys’ fees and costs.

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93. Plaintiffs are entitled to a permanent injunction to prevent future infringing conduct

and to seizure and return and/or destruction of all infringing products.

COUNT V: BREACH OF CONTRACT

(In Respect to All Defendants)



95. The Agreements executed by Flambeau constitute valid, subsisting and enforceable

contracts. BBLLC is a party, third-party beneficiary and/or assignee of the Agreements. BBLLC

has not breached the Agreements and has fulfilled all obligations under the Agreements. Any and

all conditions precedent to the Agreements have been fully satisfied by the Plaintiffs.

96. Defendants have breached the Agreements in various ways, including failing to use

best efforts to market and promote the sales of licensed products; failing to timely provide an

accurate accounting of all sales of licensed products, along with supporting documentation; failing

to timely remit royalties calculated on accurate sales figures for licensed products; failing to

develop all four products identified in the Agreement; the re-labeling of the Night Ranger ™

Lighted Fishing Tackle Box product as the Zerust Front Loader Tackle Box with Light, or other

product names, and subsequent sale of same; selling of products under the Night Ranger™ Lighted

Fishing Tackle Box after express termination of the Agreements, as well as other breaches of the

express terms of the Agreements.

97. Defendants’ breaches of the Agreements have been material and have not been

cured, and have caused BBLLC actual and continuing damages, all without legal justification or

excuse.

98. These breaches have been without the consent of BBLLC.

99. Defendants’ breaches of the Agreements entitle BBLLC to recover its actual

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damages resulting from those breaches.

100. Pursuant to Section 38.001 of the Texas Civil Practice and Remedies Code, or

other applicable law, BBLLC is entitled to recover its attorney's fees and costs incurred in

prosecuting its claim for breach of contract against Flambeau.

COUNT VI: COMMON LAW UNFAIR COMPETITION



102. Defendants' illegal acts constitute unfair competition under the common law of

the State of Texas.

103. As set forth elsewhere in this complaint, Defendants' acts have not only interfered

with Plaintiffs' and its principals’ ability to conduct their business, but have brought that business

to a standstill, and left that business and its principals poised on the brink of financial oblivion.

104. Furthermore, through its acts, Defendants have appropriated and used, in

competition with the Plaintiffs, several unique pecuniary interests created by the Plaintiffs

through the expenditure of Plaintiffs' labor, skill and financial resources.

105. Plaintiffs' pecuniary interests, which Defendants have appropriated and used,

include, but are not limited to, Plaintiffs' patents, the goodwill Plaintiffs have developed for

themselves and for their products, and the sporting goods market's appreciation of the value and

utility of Plaintiff's Lighted Utility Box system.

106. Defendants' misappropriation has been without Plaintiffs' permission or authority

and in competition with Plaintiffs' own licensing efforts.

107. Defendants' acts of unfair competition entitle Plaintiffs to recover its damages and

the costs of this action, together with an accounting and disgorgement of profits made by

Defendants on sales of their infringing and unauthorized products.

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108. Defendants' acts of unfair competition have been malicious and calculated to injure

Plaintiffs.

109. The willful, wanton and malicious nature of Defendants' conduct entitles Plaintiffs

to an award of their reasonable attorney's fees and punitive damages against Defendants

sufficient to deter recurrence of such acts against others.

110. Defendants' acts of unfair competition are irreparably injuring Plaintiffs' goodwill

and eroding Plaintiffs' share of the relevant market, and unless enjoined by this Court, will

continue to do so and cause further damage to Plaintiffs.

111. Under the common law of the State of Texas, Plaintiffs are entitled to preliminary

and permanent injunctive relief to prevent Defendants' continuing acts of unfair competition.

COUNT VII: CONSPIRACY

(In Respect to All Defendants)

112. Paragraphs 1 through 111 , supra , are incorporated by reference in this Count as if


113. Defendants acted together in a combination and conspiracy to carry out the acts

alleged in this complaint, including the breach of contract, infringement and violation of

BBLLC's rights in its patents and trademarks.

114. In carrying out the conspiracy, the Defendants committed a number of overt

unlawful acts, including:

a. willfully breaching the Agreements executed by Flambeau; and

b. infringing and diluting the value of BBLLC's patents and trademarks.

115. As a direct and proximate result of the Defendants' unlawful combination and

conspiracy, Plaintiffs have suffered and will continue to suffer damages, both monetarily

quantifiable and intangible, though no less real.

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116. The Defendants' conspiracy was willful and intentional and was carried out with the

intent to benefit from their wrongful conduct, and they are jointly and severally liable for all acts

done by any of them in furtherance of the unlawful combination.

117. Under all applicable laws, Plaintiffs are entitled to recover actual and exemplary

damages.

JURY DEMAND

Plaintiffs hereby request a trial by jury.

PRAYER

For these reasons, Plaintiffs ask for judgment against Defendants for the following:

A. Defendants, their officers, agents, servants, employees, successors, assigns and

attorneys, and all persons in active concert or participation with any of them, be preliminarily and

permanently enjoined from the following:

1. Any further acts of infringement or contributory infringement or inducing others toinfringe U.S. Patent No. 7,055,983;

2. Manufacturing, producing, distributing, circulating, selling, offering for sale,

advertising, promoting or displaying any product bearing any simulation,reproduction, counterfeit, copy or colorable imitation of Brooks & Baker's NIGHTRANGER and conformation/trade dress trademarks on products, including but notlimited to the Zerust Front Loader Tackle Box with Light;

3. Making any statement or representation whatsoever, or using any false designationof origin or false description (including without limitation, any letters or symbols), orperforming any act in commerce, which can be or is likely to lead to the trade orpublic or individual members thereof to believe that any products manufactured,distributed or sold by Defendants are in any manner associated or connected withBrooks & Baker or the Lighted Utility Tackle Box or are sold, manufactured,

licensed, sponsored, approved or authorized by Brooks & Baker;

4. Directly or indirectly falsely advertising or promoting or selling the Lighted UtilityTackle box;

5. Making or inducing others to make any false, misleading or deceptive statement of fact, or representation of fact in connection with the promotion, advertisement,display, sale, offering for sale, manufacture, production, circulation or distribution of

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the Lighted Utility Tackle box or of any product in such a fashion as to suggest thatsuch product is equivalent to or a substitute for, or has the same qualities orcharacteristics as, Plaintiffs' Lighted Utility Tackle Box;

6. Unfairly competing with Brooks & Baker;

7. Permanently enjoining defendants, and their respective officers, agents, servants,employees, and any others acting in concert with defendants from infringing any of the Patents in Suit;

8. Awarding Plaintiff damages resulting from the Defendants' acts of infringement andordering defendants to account for and pay to Plaintiff damages adequate tocompensate Plaintiff for the infringement of its patent rights;

9. Imposing a fine on Defendants in the amount of $500 for each lighted utility boxsold with the false marking of the Brooks and Baker patent numbers pursuant to 35U.S.C. § 292;

10. Awarding Plaintiff treble damages pursuant to 35 U.S.C. § 284 as a result of thedefendants' willful acts of infringement;

11. Declaring this case exceptional pursuant to 35 U.S.C. § 285 and awarding Plaintiff interest, costs, expenses and attorneys' fees; and

12. Granting Plaintiff such other relief as the Court deems just and proper.

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Respectfully submitted,

TRAN LAW FIRM, L.L.P.

/S/ Trang Q. Tran_____________Trang Q. TranState Bar Number: 00795787Andrew H. IwataState Bar Number: 24048568TRAN LAW FIRM L.L.P.3050 Post Oak Blvd, Suite 1720Houston, Texas 77056Telephone: (713) 223-8855Facsimile: (713) [email protected] [email protected]

L. Todd Kelly, EsquireThe Kelly Law Firm, P.C.One Riverway, Suite 1150Houston, TX 77056-1920(713) 255-2055 Telephone(713) 523-5939 [email protected]

Daniel F. Coughlin, EsquireLaw Offices of Dr. Daniel F. Coughlin

Post Office Box 152West Mystic, Connecticut 06388-0152(203)992-7173 Telephone(888)685-8674 [email protected]

A. Daniel Woska & Associates, P.C.3037 N.W. 63 rd, Suite 251Oklahoma City, OK 73116(405) 562-7771 Telephone

(405) 285-9350 [email protected]

ATTORNEYS FOR PLAINTIFFS

mailto:[email protected]












Documents

Brooks & Baker v. Flambeau et. al